Patentable Subject Matter: Supreme Court Challenges Chief Judge Rader's Broad Notion of Software Patentability

by Dennis Crouch

WIldTangent v. Ultramercial (Supreme Court 2012) Docket No 11-962

The Supreme Court has rejected another Federal Circuit patentable subject matter decision with a GVR and has ordered the appellate court to review its patentability decision with further consideration of Mayo Collaborative Services v.Prometheus Laboratories, Inc., 566 U.S. ___ (2012). In its standard GVR language, the Supreme Court wrote:

The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012).

The patent at issue in this case claims a particular method for distributing copyrighted products over the Internet. Patent No. 7,346,545. The basic gist of the invention is that the consumer receives a copyrighted product in exchange for viewing an advertisement -- and it all takes place over the internet and with a particular monetization scheme.

In its broadly written opinion, the Federal Circuit (Rader, C.J.) found the claimed invention patentable under Section 101 based upon the requirement that a computer be used to perform the method and the programming complexity required to carry out the claimed elements. The court wrote that while "the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski,...the '545 patent does not simply claim the age-old idea that advertising can serve as a currency. Instead, the '545 patent discloses a practical application of this idea."

Following the Federal Circuit decision in Ultramercial, the Supreme Court decided Mayo v. Prometheus. In that case, the Supreme Court rejected the Prometheus patent as effectively encompassing an unpatentable law of nature. That revives the historic notion that the scope of knowledge held in the prior art is an important aspect of the Section 101 analysis.

The Supreme Court issued a parallel GVR in the gene-patent case of Myriad Genetics. Other pending 101 appeals include Fort Properties v. American Master Lease (en banc petition); Accenture Global v. Guidewire; Bancorp Services v. Sun Life; and others.

Claim one the '545 patent reads as follows:

1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Comments

[6]

DO IT UNTO IT!

[MM]

the consumer receives a copyrighted product in exchange for viewing an advertisement -- and it all takes place over the internet

If we stop issuing patents on this technology, we'll never know what to buy grandma for Christmas!!!!!!!!!

[lll]

Does someone pay these two imbeciles to act like imbeciles?

[bad joke ahead]

This is officially getting ridiculous.

Okay, so gut the 545 patent of it's "abstract idea", and see if there are any elements left, then apply 103, and gee, I wonder what the outcome has to be....

Why is the supreme court trying to destroy a workable system that drives our economy (i.e., software and chembio)?

[The Shilling Shall Continue]

Being "paid" is not required to shill, or apparently, to act like imbeciles.

An agenda to be pushed based on pure philosophy that refuses to acknowledge the veracity of opposing points of view is just as culpable as the prostitution that comes from being "paid."

[Let me guess ...]

Radar et al. will hold the same thing on remand (while using the gobblygook language of Mayo v. Prometheus).

No natural process + practical application of abstract idea = patentable subject matter.

If SCOTUS wants to invalidate software-related patents, they are going to have to do the dirty work themselves.

[MM]

pure philosophy that refuses to acknowledge the veracity of opposing points of view

The Mayo Nays, in a nutshell. Thank you.

[6]

"Radar et al. will hold the same thing on remand (while using the gobblygook language of Mayo v. Prometheus)."

I certainly hope so! Yummy yummy yummy CAFC reversal by the USSC!

[It's All About The Stevens]

It will be interesting as the application of the idea does seem to avoid some of the Benson-Flook-Prometheus-like pitfalls. It is particularized and closed-ended. It has been established that the process cannot be completed in one's mind, and that the technical aspects are integrated into the claim (and cannot easily be dismissed as "extra" solutional (pre, post or whatever)). One can even tack on a "settled-expectations" argument, although that would seem to be superfluous.

If I were counsel, I would also find a way to add in comments on the recent ongoings in Europe that are throwing some serious cold water on the notion that copyright is enough protection for software. I am sure that Rader is aware of these developments, and could perhaps weave in some of the Court's Stevens lore (but correct the purpose and coverage differences that Stevens mangled).

[A Casual Observation]

Not sure why MM is so thankful as this impugns him.

[MaxDrei]

About Stevens writes: the recent ongoings in Europe that are throwing some serious cold water on the notion that copyright is enough protection for software

What are these "ongoings", please? I feel I should know, being my baileywick and all.

[It's All About The Stevens]

MaxDrei,

European Court of Justice ruling May 2 - (SAS Institute Inc. v. World Programming Ltd., E.C.J., No. C-406/10, May 2, 2012)

This is one of two very shaky pinnacles underlying some of Stevens' dicta that is high time corrected.

[Non Sequitur II]

You are assuming what you are trying to prove, which is whether or not this is a practical application of an abstract idea. Defining the "abstract idea" determines the outcome. Is it tying media distribution with advertising? Is it tying media distribution with advertising using a computer? It is getting paid for distributing media in conjunction with advertising?

Unfortunately for the public, there is no clear way to parse claims into the "idea."

[Barry Manilow's trademark lawyer]

Stevens et al are gonna kill this one. The only technological element is the step: "a third step of providing the media product for sale at an Internet website;' since is the only mention of internet website. All the rest of it can be done in your head.

Why not specify in each step that is is being done at the Internet website? That takes away from the 101 arguments. Unless of course we think that patents ought to be allowed on transactions between people that to not have a technological component.

[Let me guess ...]

The identification of the "abstract idea" does not matter. Give me an hour, a bottle of booze, and a patent claim and I'll identify a dozen of "abstract" ideas for most patent claims (the booze helps with the 'abstractization' process).

SCOTUS has been little help in identifying when a claim covers just an abstract idea beyond ("I know one when I see one"). Perhaps they can give some guidance as to what constitutes a practical application of an abstract idea.

[No]

Both the Eighth and Ninth steps refer to an "interactive message," which appears to be a particular type of computer data structure, which futher ties the limitations to a machine.

[Alyssa P. Hacker]

Shoudnt companies like Apple (software), Oracle, Microsoft, Google, etc. be very afraid of what the Supremes are doing to software patents? I can't see how a slide-unlock gui patent, a table row reduction / optimization, graphics patent, or even a search optimization patent could now pass 101!

[Ned Heller]

Just a question of circuit protocol, does the same panel hear the case on remand from a CVR?

[6]

It's true that they may lose a bit in lost infringement of their patents, but on the other hand they stand to lose less in terms of patents they infringe. Who knows? Maybe they're quaking, and mabye they kinda hope the long nightmare will be over. Keep in mind that they do have patents on other things.

[6]

Iirc from other cases like this they did. But that might have been random or determined on a case by case basis Idk.

[Ned Heller]

We wondered after Bilski whether the problem with the claims at issue there weres that failed to claim an implementation on a computer or the internet or such -- some tie to a physical implementation -- otherwise the problem with Bilski was not that, but that it manipulated an abstract concept: risk, i.e., balancing risk did not produce a new and useful physical result. No amount of reciting of the internet or of computer, or telephones or pen and paper or abacuses or other tools, would save the Bilski claim if that were the problem.

Now we seen in the CVR that the Supreme Court does not believe that the simple tie-in to computers or the internet or the phone system or some other physical tools is sufficient when an abstract concept such as "value" is being manipulated.

Perhaps the Ultramercial claims are patent eligible still. But the theory, I suggest, will have to do more with the human interactions than with a tie into computer hardware and the like.

[Serious Question]

"will have to do more with the human interactions than with a tie into computer hardware and the like"

How much more do you want?

The claimed system cannot exist outside of the computer hardware.

[MM]

It has been established that the process cannot be completed in one's mind,

Right. The invention relies on a POWERFUL COMPUTER BRAIN instead of a human brain to accomplish the ancient task of presenting information to one party and "monetizing" the service.

Oh but wait! -- the information in these claims is copyrighted information. Somehow I forgot that critical fact which changes everything.

LOL.

[Ned Heller]

Serious, but the implementation on a computer or using the internet, or using a phone or pencil and paper or other such tools, is irrelevant. This lesson should have been learned way back when Benson was decided when the Supreme Court made this exact point.  The tools of execution of the algorithm are legally irrelevant.  The claim as a whole must still do something physical that is new and useful.

This is why I suggested the claims still might pass muster because it does call for a lot of human interactivity.  I am not sure, though, whether this is enough to save the claim given that the claim as a whole simply implements an abstract concept that if one watches an advertisement, the advertiser will pay for the cost of the proprietary content. 

[Ned Heller]

Malcolm, I think this remand lays to rest the idea that the only thing wrong with Bilski was the failure to implement the abstract risk balancing algorithm on a computer.

I think the IBMs of the world are going to be officially apoplectic about this remand. Recall, they went ballistic over the MOT, implying in their briefing to the Supremes that the only thing wrong with the Bilski claims was their failure to tie the claim to technology, meaning a programmed computer.

Rader obviously read IBMs brief and gave us Ultramercial and Ultramercial is now vacated.

IBM will be displeased by this CVR. Big time.

[MM]

computer data structure

LOL.

[Serious Question]

But you are missing the distinction. It is not so much an issue of "such tools," as it is exactly how the method is carried out.

In other words, it is a question within a specific condition. In this case, the claim makes it so that the "tools of execution" must be relevant and cannot be irrelevant.

Instead, the calling for a lot of human interactivity becomes the irrelevant issue, as any such human actions outside the claim are, well, outside the claim.

Very much on point is that the claimed implementation differentiates from the Benson-Flook-Prometheus issues as It's All About The Stevens points out. Regardless of the putdown from MM, even the anti-internet CAFC case Cyborsource made the distinction for computation systems outside the normal breadth of human intellect.

So again, how much more do you want?

[Dorothy]

"lays to rest the idea that the only thing wrong with Bilski was the failure to implement the abstract risk balancing algorithm on a computer."

Nice strawman.

[Ned Heller]

Simple, I think you have to stop considering CCPA and Federal Circuit decisions on this topic.  The Supreme Court has reaffirmed Benson, Flook, Diehr, and made clear, I believe, that simply implementing an unpatentable algorithm on a programmed computer is not the end use the Benson court had in mind.  

[6]

"In other words, it is a question within a specific condition. In this case, the claim makes it so that the "tools of execution" must be relevant and cannot be irrelevant."

Under that reasoning then Benson turns out the other way. Newsflash bucko, nothing in a claim will necessarily make it so that a "tool of execution" must be relevant and cannot be irrelevant.

"Instead, the calling for a lot of human interactivity becomes the irrelevant issue, as any such human actions outside the claim are, well, outside the claim."

I could not agree more.

"So again, how much more do you want?"

It really isn't that hard brosensky. We want more in a patent claim than: this here abstract idear that I just thunk up placed on your interwebs/a CD/a computer. If that's all you software people come up with, then guess what? Maybe you don't get patents.

Another way of viewing this for attorneys is: stop appending things to the claim to try to make it patentable, as you would do to get around a 102/103. Instead change your entire outlook about the SUBJECT MATTER at issue in the claim which you are trying to cover so that you are no longer trying to patent judicially excepted subject matter by appending things to the claim. Then, claim something else if you have WD for it. If not, kiss your app/patent goodbye.

[6]

An interactive message is one of these?

computer data structure

http://en.wikipedia.org/wiki/Data_structure

I do have to wonder why they didn't just say "In computer science, a data structure is a particular way of storing and organizing data in a computer so that it can be used efficiently, I.E. AN INTERACTIVE MESSAGE." Somehow I doubt that an interactive message is a data structure.

[Mike]

Message from the SCOTUS to Federal Circuit: clean up your mess or we'll do it for you (oh, and you're probably not going to like how we clean it up if you don't).

The Ultramercial decision is a horrible decision. You know it's going to get ugly when they start justifying the patent-eligibility by stating, "Many of these steps are likely to require intricate and complex computer programming" and that "the invention involves an extensive computer interface." Of course the claims gloss over both both those considerations and shoot squarely for the "I invented every possible combination of said high level steps."

Even as a patent attorney, it's hard to justify how claims like those in the Ultramercial case are anything more than a mere set of requirements and that they articulate a the four corners of a particular invention. Take that compared to the ordinary claims of the more tangible classes.

The SCOTUS is likely viewing just that same way.

[MM]

Question 1: Is there any dispute (i.e., has it been admitted) that the entire claim as written (i.e., each element, in the order presented) is old and conventional except for the "IP-protected" nature of the information being presented? If so, the claim is dead in the water under 101 or 102, in much the same way as the claim at issue in Prometheus was dead in the water.

Question 2: Is there any dispute (i.e., has it been admitted) that the entire claim as written (i.e., each element, in the order presented) is old and conventional except for the generalized computer implementation of ancient, conventional business methods applied to the delivery of data electronically rather than physically? In other words, given that computers and data delivery on demand were old as of the filing date, how is this "invention" different from someone trying to patent a method of charging for a magazine ad, where the ad is for a book that can be obtained by a "user" calling the publisher of the magazine and saying "I'd like that book," wherein the book is mailed to the user along with an ad and people all round are charged and the accounts are updated.

It defies belief that the USPTO could issue this p.o.s. and any court could find it valid under 103, much less 101. We all know that an entirely different universe of (exceedingly friendly) rules has been applied for years by the USPTO whenever a POWERFUL COMPUTER BRAIN is referred to in the claims, but this is ridiculous.

[Serious Question]

6,

"Under that reasoning then Benson turns out the other way"

No, not to the extent of the actual reasoning given in Benson. You need to follow that case a bit more closely. Benson expressly found that the claim covered all uses. The instant claim expressly are limited.

The rest of your comments indicate that you do not know what the case is about. I recommend you reading and understanding the case before making your ignorance so pronounced.

Ned,

I do not understand why you think I am depending on CCPA and Federal Circuit cases to the exclusion of Supreme Court cases. I am not. Perhaps you missed It's All About The Stevens post above, but withstanding that miss, I reiterate that the instant case claims avoid the Supreme Court case issues (including integration of the concerned element into the claim as a whole).

And I do note that you have left open points very much on topic concerning Diehr on other threads. I don't care to sidetrack onto that conversation (you can continue it there and answer the points raised against you), but here, on this thread, again, what more do you want?

[6]

First off, let me just say that there are probably very few human beings alive who "follow Benson" as closely as I do, both in understanding and in practice. Just to be clear, I've read the entirety of it many many many times and I follow it to the letter even as those around me do not. Indeed, the only reason we're discussing this case is because a lawltard somewhere did not follow that case as closely as I do when he filed the application.

"Benson expressly found that the claim covered all uses"

I agree. And in the instant case which uses are not covered? Once you have determined that, and written them down in a first list, make a second list of uses which would not be covered save for field of use limitations, and added on nonsense about computers etc. and other drafting shinanigans. Now subtract the uses on your second list from the uses listed on your first list. This final list is a list I would be very much so interested in seeing.

If you would be so kind as to show me this final list, and if it contains a substantial number of things, I shall withdraw anything I would otherwise say on the subject of this case.

"The rest of your comments indicate that you do not know what the case is about. I recommend you reading and understanding the case before making your ignorance so pronounced."

I know what both cases are about, Benson and Wild. Benson I know much better though, due to having read it time and again. What, specifically, do you feel like I don't know about Benson or Wild?

[bad joke ahead]

There's no dispute that you're confusing 101 with 102/103.

[MaxDrei]

Thanks. ECJ not yet involved in substantive law of validity of patents, so had not appreciated the relevance of this decision.

[6]

"The identification of the "abstract idea" does not matter. Give me an hour, a bottle of booze, and a patent claim and I'll identify a dozen of "abstract" ideas for most patent claims (the booze helps with the 'abstractization' process)."

Gl with that. Although you're right about the booze.

"Perhaps they can give some guidance as to what constitutes a practical application of an abstract idea."

There was a practical application of an abstract idea/lawl of nature in Mayo. Of course, that is largely irrelevant as to whether or not the claim in fact is directed to an abstract idea which of course the claimed practical application of an judicial exception. Of course, it turned out that the USSC was able to suss out that the claim in Mayo was such a claim.

[MM]

There's no dispute that you're confusing 101 with 102/103

Sounds familiar.

Nine-zero.

GFY.

[MM]

I humbly suggest that another way of looking at it is to ask: what problem is purported to be solved by this invention and (the key question) what is the nature of the allegedly new solution to that problem?

If the novel solution boils down to "use a computer", then one correct result would per se obvious and another correct result could be ineligible for claiming a computer-implemented invention too abstractly. Yet another correct result could be per se lack of written description support (functional claiming in the absence of recited structure which would distinguish the computer utilized in the method from any other computer).

Does it really matter? We now know for sure that it doesn't, at least not as far as the Mayo Nays and Diehrbots are concerned. They will howl and cry no matter how these p.o.s. claims are tanked.

[Anonymous]

Is it wrong to confuse 101 with 102/103 still? See the Mayo decision

[No]

"Somehow I doubt that an interactive message is a data structure."

You are dumber than most people give you credit for. What do you think a message is in the context of the invention? It is data being sent back and forth (i.e., a message). Moreover, it is interactive (i.e., a data structure that includes some type of functionality).

[Les]

We all pay 6. He works for the Government.

[MM]

It is data being sent back and forth (i.e., a message). Moreover, it is interactive

News flash: just because you say something has structure if it meets conditions X and Y doesn't mean that it actually has structure. To put it another way, if you can't claim Z as a composition of matter, then Z very likely has no patent-relevant structure (or at least lacks a physical structure that is capable of being described in structural terms).

[Ned Heller]

Serious, I think the underlying Diehr process was a conventional process in that it passed the MOT as was noted by the Court itself. It also had a novel step independent of the math, meaning that the 101 issue was not really there. The Prometheus Court said as much when it opined (as Malcolm has said numbers of times) that had the metabolite blood test (a claim element) been inventive (less conventional) the Prometheus claim may have been patentable regardless of the correlations. But even assuming the only thing new was the math, and this was NOT the case in Diehr, the Diehr court held that the integration of the math into the process was enough for 101 purposes.

Contrast Flook were the underlying process was generalized from inputs to outputs, from end to end, and did not involve a transformation. The modification of such a generalized process of purely conventional elements common to all such processes was not enough.

Prometheus was the same as Flook here. Everything in the claim was old and conventional, and the correlations did not change any of the claimed process steps into anything new. The correlations were applicable to an unclaimed "adjustment" step, not to the initial administration step or to the blood test step.

Here, what is transformed? Money? Value? What? The use of tools such as computers, the internet, phones or the like is not sufficient to make patentable subject matter that only manipulates abstract concepts.

[Sort of Like "Isolating" and "Purified"]

"(or at least lacks a physical structure that is capable of being described in structural terms)"

LOLZ, like the shorthand notations that were recently dicussed?

[Join The Chorus]

All together now: What-Ev

[Charles H. Duell]

"which would not be covered save for field of use limitations, and added on nonsense about computers etc. and other drafting shinanigans"

All patent law is verboten per 6, as he classifies all patents as falling under "and other drafting shinanigans."

Close the doors and shut off the lights on your way out 6.

[MOT is dead. Would someone please inform Ned?]

Ned needs, quite literally, an anvil dropped on his head.

He also needs to re read Benson, especially about the part where Stevens admits what his holding does not cover (and needs to understand that Bilski and Prometheus have all but relegated MOT to the trashbin of history as a definitive test. It is only a clue and the answer to that clue is simply not dispositive one way or the other.

[Ned Heller]

But, Diehr was all about the MOT....   The claim modified by the Math was a traditional process that as a whole produced a transformation.  

The problem in Prometheus was that the process steps that did pass the MOT added nothing to the correlations because the correlations were not integrated into those steps to modify them.

Stevens in Flook was clear that the underlying process itself was not inventive and too generalized.  The limitations to a field were not enough, emphasizing that  Benson's "wholly preempt" was not to be taken literally.    The point of Benson was, as was repeatedly stated in Benson, that the use of machines to calculate was not an end use within the meaning of Le Roy v. Tatham and O'Reilly v. Morse and other such historical Supreme Court cases.

[Things to drop on Ned's head]

Lead pipes. Let's use lead pipes instead of anvils.

[Only the control software was new]

The point of novelty in Diehr was an abstraction.

[Repeating History]

The GVR dance reminds me of the Bergy/Chakrabarty aftermath to Benson/Flook.

Perhaps a similar sea-change is in the works.

[Ned Heller]

No it was not.  The constant monitoring of temperature was the PON, which makes the fact that the case got to the SC as a 101 case at all amazing.

From Diehr:

"It is possible using well-known time, temperature, and cure relationships to calculate by means of the Arrhenius equation[2] when to open the press 178*178 and remove the cured product. Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time.[3] Because the temperature insidethe press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.[4]Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measurements are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation. 179*179 When the recalculated time equals the actual time that has elapsed since the press was closed, the computer signals a device to open the press. According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.

"Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter. That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents' claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.

...

Our conclusion regarding respondents' claims is not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer are used. 

...

"In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a "computer" to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of "overcuring" or "undercuring," the process as a whole does not thereby become unpatentable subject matter."

[Brad]

Oh my, here we go again :)

[Slow down big guy]

Rader rushed this thing out the door in the wake of CyberSource, the same way he did with Research Corp after Bilski. No surprise it was vacated, it's not a masterpiece to say the least. If he tries to follow Prometheus slavishly, he'll have to remand the case to district court for development of claim construction and prior art impact on the analysis. But more likely, he'll rewrite, keeping it a reversal, betting that the Supremes have tired of toying with the CAFC on this issue. Not a bad bet.

[More Abstractions]

"lessens the possibility"

That too, is an abstraction.

[MOT is still just a clue, and Ned is still clueless]

" The claim as a whole must still do something physical that is new and useful."

But what does the Patent Office have to say about patents that merely distribute something?

Results of Search in US Patent Collection db for:
TTL/(distribute OR (distribution AND method)): 3434 patents.

Includea an early favorite: 3393 4,103,599 Method and means for improved air distribution. I'm pretty sure the air fails MOT in the way you are thinking of it.

Last I checked, distribution patents generally do not do something physical that is new and useful in any way different than the instant claim.

[Autoclave Expert]

You've gone and quoted it again, the point that proves you wrong Ned.

Exactly what do you think was new to the (old) computer that supplied all this wonderous novelty to everything else in the process for curing rubber that was already old?

Point in fact, the entirety of the point of novelty was the control software, as it was the control software that did the constantly determining and recalculating.

[Mark Summerfield]

The claim does not say that the information is 'copyrighted'. What it says is that the media products are 'covered by intellectual-property rights protection'. I understand this as a technical limitation, i.e. reference to a technological protection measure, such as DRM.

You can apply TPMs to things that are not actually subject to copyright. One should beware of reading into the claims interpretations that actually come from commentary intended to clarify the practical application of the invention, rather than the limitations actually present.

The technical point here is that the consumer

cannot

view the protected content unless authorised to do so by the 'facilitator', and thus cannot circumvent the requirement to receive the embedded advertisement.

Now, I am not suggesting for one moment that this is enough to get the 'invention' past 103, but where is the 101 issue here?

[MMGFY]

Nine zero against your mental steps test theory.

[6]

Ned doesn't think anything was new to the (old) computer that supplied all this wonderous novelty to everything else in the process for curing rubber that was already old. He thinks the MONITORING as opposed to the DETERMINING OR RECALCULATING was novel. And I would guess that the monitoring was done by some sort of thermometer, in conjunction with the old computer. In case you didn't catch it, the decision seems to be telling us that a thermometer in the rubber curing chamber was not enabled, that is, nobody could figure out how to monitor the temp inside, probably because the thermometer would melt.

Although I myself think that the "inventive contribution" was in the auto-opening in response to the monitoring. Reading the full Diehr decision supports this, as does the first sentence of the patent and every issued claim in the issued patent 4344142. The use of the equation at issue in Diehr simply enabled them to know when to auto-open at the right time, because otherwise they wouldn't have known when to auto-open. Fact is, they didn't have auto-opening rubber curing machines at that point because they didn't know when to auto-open and that requires knowing the temp inside all throughout the curing process.

But you would know that had you been playing along. Ned doesn't know it because he is too unsophisticated technically.

"According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art"

Just fyi it still appears that all those things were novel even from our 20/20 hindsight viewpoint 30 years later.

The only thing which is at all puzzling about Diehr is why on earth the prosecutor would have bothered to put the Arrhenius equation in the claims at all. But, perhaps they took the enablement req a little more seriously back then and didn't claim overmuch past what they specifically enabled. Or perhaps he thought that taking the temperature of rubber was old, though not being done during curing and feared a 103 of that feature, as well as the auto-opening feature if those were all he included in the claims.

[Autoclave Expert]

"them"???

How cute when you personalize the machine that is "auto-opening."

Think just for a second and realize that you have just "auto-proved" my point!

Software control IS auto-control.

[Nike NFL Jerseys Free Shipping]

The only technological element is the step: "a third step of providing the media product for sale at an Internet website;' since is the only mention of internet website. All the rest of it can be done in your head.

Why not specify in each step that is is being done at the Internet website? That takes away from the 101 arguments.

[david@djstein.com]

SCOTUS's attitude toward the patent system resembles George W. Bush's attitude toward Iraq: Let's disassemble it for fun, and tell someone else to put it back together.

Wasn't KSR enough indication of the damage caused by this nonsense? SCOTUS's KSR holding was: "We don't like KSR, but we refuse to propose any replacement. We're going to instruct the PTO to come up with some new tests." So the new test conceived by the PTO was no test at all: just let examiners use the smell test or personal judgment to decide when references can be combined. And examiners have taken full advantage of that: in the 150+ OAs that I've reviewed since KSR, NONE of them make any attempt to justify a 103 combination. They all just state: "One of ordinary skill would have combined these references."

I don't think that SCOTUS appreciates the boost in subjectivity, inconsistency, and unpredictability caused by that change - as evidenced, e.g., by the multi-year BPAI backlog - but I don't think they really care about the consequences of their decisions.

[MaxDrei]

There's hope yet then David, if those USPTO Office Actions really do state:

"One of ordinary skill would have combined these references."

I say that because in Japan they write:

"one of ordinary skill could easily have combined these references"

and because, at the EPO, the "would, not could" mantra is that nothing is obvious except that which:

"one of ordinary skill would (NOT merely could) have combined".

At the EPO, "would", until it is underpinned by persuasive logic and reasoning, is mere hand-waving, unsupported assertion, worth nothing, an insult to the intelligent and informed reader and to the dignity of civilised debate between specialised professionals, about issues of patentability over the art.

Do you not think then, that from now on, the way to prevail at the USPTO is to raise the tone by taking a leaf out of the EPO playbook, and holding examiners to their word ("would"), bringing it home to them what that implies, namely TSM?

[Judith_IP]

The problem with this claim is not that it is abstract, it's that it's not new.

I'm having a really hard time conceptualizing an advantage from claiming a "advertising shown on a computer monitor, stored on a memory in a server." By focusing on the "tangibility" of the elements, we elevate form over substance. And in a way that no one has usefully distinguished for me yet. What's the differentiating factor between hardware and software? What you can implement in hardware, I can implement in software, and vice versa.

[101 Expert Clears Things Up]

Benson, Flook, Diehr, Bilski, Prometheus, and Ultramercial are all 101 statutory inventions. The only reason Diehr received his patent and the others did not was that Diehr had a pro patent majority on the Supreme Court, at the time.

All processes have at their core an abstract ideas that can be dissected from the claim and repeated as the definition of the invention.

The Diehr Court majority chose not to do this and instead focused on how the abstract ideas were integrated in the claims as a whole. When a claim is integrated in is applied and you pass 101,

And that is the choice we are faced with today and will always be faced with as long as the statute includes processes as statutory subject matter.

The Courts can either dissect the abstract idea using whatever new world, phrase, or rationalization they wish, or they can focus on the integration of that idea in the process as a whole.

The first approach retards the progress of the useful arts.

The latter approach promotes the progress of the useful arts,

And that's all there is to say about that.

[GD War Vet]

"No it was not. The constant monitoring of temperature was the PON, "

Ned, that is an abstraction and if the Diehr Court so chose they could have easily did what was done in Benson, Flook, Bilski and Prometheus and dissected that out of the claim and found the invention non statutory.

But the fact is processes are not abstractions when applied.

We are not talking about expressing opinions, feeling and emotions here.

A process is a series of objective steps that when executed produces a concrete guaranteed result.

A process by itself is statutory subject matter.

Rich understood this.

Congress understood this and still does.

In fact anyone with a 21st century mindset that is pro innovation and likewise pro patent understands this.

However, there are people like you that don't give a d am and want to fight a GD war no matter what the cost.

There are Patent Bigots like MM that are as worse as the baptist preacher on CNN preaching how he wants to put all Gays in an electric fence and let them die.

You people are fundamentalists n ut jobs with some like minded empathizers on the bench.

And if you win we all suffer.

[Charles H Duell]

Les,

I'm sure you recognize that the line of "we all pay" sounds in general taxes which is not what pays 6. It is innovators that pay 6. The same innovators that the self-destructive m0r0n would see shuttered with his anti-patent nonsense.

[The Wares]

You should have seen the thread where Anon was leading Ned through the software and hardware understanding. Ned actually took a step in the right direction (before realizing where his steps lead and bolting the conversation).

[A Hoffman]

Thank you Forrest. Man that was beautiful.

[Some Common Sense From The Manufacturing World]

"The chemical processes involved in rubber curing are well known, as are the monitoring of process variables, the use of arrhenius equation to compute cure time, the notion that variables be recomputed and readjusted, and the use of computers for 'automatic process monitoring.' "

THREE YEARS before Diehr, the above quote has been only superficially modified and shows the complete difference in the cases of Flook and Diehr was where Stevens speaks from.

In one, he speaks from the majority, in the other he speaks from the dissent.

If anyone tries to tell you that what is going on is anything else but a philosophical tug of war, they are being dishonest. Anyone with any background in manufacturing can see right through the crrp and see that there is no fundamental difference between Flook and Diehr. None.

[Eliminating Purpose]

The difference between "would" and "could" is superficial at best.

The M of TSM is just too easily reconstructed in hindsight. An invention must be worth something in order to be pursued in the first place and this something is the motivation. The only thing that can escape this wild M is the accidental invention, the oops-what-have-I-done? invention. Any purposeful endeavor is eliminated because the very purpose for beginning the effort is the motivation that knocks the invention out.

[bb]

Its about time the Sups. vacated Article I, Section 8, Clause 8 of the United States Constitution. I don't know why they're draggging their feet so much on this, just come out and say it.

[Don't Let the Door Hit You on the Way Out]

I'm pretty sure everyone knows that the Supremes cannot and will not 'vacate' that part of the constitution.

You may return to tech dirt now.

[NWPA]

Best comment of the thread!

[NWPA]

A lot of researchers are likely to be given pink slips over this decision.

I wonder if Rader won't throw in the towel. He might just do what Rich did after Benson and say I guess none of this is patent eligible and let the system fall apart. Seems like every system we have now that once worked needs to completely fall apart and be rebuilt. Finance, medicene, education, housing, election financing, etc.

I guess the SCOTUS just wants to put everyting into the trash heap.

[Ned Heller]

Autoclave, "control software?"
 
Control software?
 
The point of novelty?
 
Really?
 
Whatever you mean by that, it wasn't even claimed.

[Reinier Bakels]

The purpose of the patent system is *not* to allow the appropriation of whatever idea, and to prevent competition. I you are really keen on "protecting" against competition, leave capitalist society and move to North Korea!

[Lionel Hutz]

Wow,

This statement is imbecilic. This would be like saying "You developed a wrking teleporter, well Gene Roddenberry (among others) beat you to it. It does not matter that they did not have an actually working system."

And this comes from a guy who defends straight up gene patents - the biggest and costliest joke patents.

[Paul Cole]

I am not, as those who follow this blog will be aware, a fan of the Mayo v Prometheus decision.

But if a paradigm case of a standard business method + apply it using the Internet were required, the claim in issue here is it.

Should it really take a trip to the Supreme Court to declare this claim unpatnetable?

[Ned Heller]

Night, Rader appears to have been an acolyte of Rich who was, as we know, a creature of the NYPLA and the AIPLA.  The patent bar have long struggled to have software and programmed computers be considered patentable as new machines, and processes reciting their use also eligible despite Benson.  It does indeed look like the Supreme Court will have none of it despite the remonstrations of IBM and the like that patenting software is good for America and especially good for companies, like IBM, whose business is primarily related to development of software.
 
Indeed, Night, the long struggle might be seeing its Waterloo.
 
 
 

 

[MaxDrei]

Well thanks for that thought, Elim. I guess the 30 ever more successful years of EPO application of its could/would Problem and Solution Approach is no answer to your assertions then.

If your assertions stand up though, there ought by now, after 30 years, to be serious complaints from corporate users (patent owners and opponents) and serious academic studies which show that the 1000+ decisions a year from the highest level of appeal at the EPO are all tainted with hindsight. And are there? No.

EPO Problem and Solution Approach is i) objective and ii) free from ex post facto reasoning. OK?

[Autoclave Expert]

"Whatever you mean by that, it wasn't even claimed."

That's what you think and once again your thinking is in error. Your error comes from not understanding the subject matter. You read, but do not comprehend. You don't even begin to realize that you don't realize what is going on. You don't know that you don't know.

Tell me, exactly what it is that controls the performance of the artificially personalized actions of constantly measuring, monitoring, determining, recalculating or any other verb that the machine (not a person) actually does in the method.

Once you recognize that a person is not a machine and that it is the programming (software) that makes the difference, You will have your eyes opened.

Yes, Ned and 6, it is a Great Computer Brain, that is the object of the personification going on here. And yes, the computer itself was admittedly old. Ergo, the point of novelty can only be one thing, and one thing only. If you had any real world experience, this point would be plainly evident. Everything in the process is admittedly old except the abstraction and the implementation of the abstraction in the (admitted) old computer.

[Reading Tea Leaves Is Notoriously Unpredictable]

"eligible despite Benson"

Perhaps because of this quote from Benson:

"We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold."

Read that quote slowly and try, try, try to understand.

Recall then, the dance of the GVR post Benson/Flook in the cases of In re Bergy/Chakrabarty and how the Supremes in those cases gave the law its widest patent scope pronouncements ever.

[Eliminating Purpose]

If Only, MaxDrei, if only...

...our wonderful Court in KSR did not make it virtually impossible to take the step to PSA. That water is under the bridge as they say.

(and by the way, from what I understand, there are frequent questions as to hindsight in the PSA approach, but that's not even reached in the current discussion)

[Ned Heller]

Obviously, you have never practiced patent law.

[Ned Heller]

So?
 
Benson did have a lot to say about the use of machine to compute math.  What was that?

[MaxDrei]

As you say, there are indeed "frequent questions" about hindsight in EPO-PSA. Could not agree more.

These questions come from people who know about patent law, know how difficult obviousness is, but do not yet have a working knowledge and experience of EPO-PSA.

There are very many patent attorneys around the world, and only a minority of them have any direct experience of how EPO-PSA works.

[Autoclave Expert]

Obviously, neither have you.

Great. We traded insults. Glad to get that out of our way.

Now we are still at the point that you don't know what you don't know because you don't know the subject matter.

Do you want to try to actually tell me exactly what it is that controls the performance of the artificially personalized actions of constantly measuring, monitoring, determining, recalculating or any other verb that the machine (not a person) actually does in the method?

Any time you want to open your eyes is fine with me.

[6]

"Seems like every system we have now that once worked needs to completely fall apart and be rebuilt. Finance, medicene, education, housing, election financing, etc."

Amen

[6]

Will do chuck.

[Ned Heller]

6, as you say, autoopen in response to a recomputed time was new. But that depended upon monitoring the temperature inside the mold. If, as you say, that was not done because of lack of an appropriate thermometer, well that thermometer too could be another invention.

Regardless, you and I do agree that the inclusion of the Arrhenius equation in the claim appears to have been completely unnecessary to patentability.

It is a wonder why the PTO took this case to the Supreme Court? It could only be because they claims were much like the claims in Flook and they really didn't understand Flook.

Your thinking on this last point?

[6]

"Ergo, the point of novelty can only be one thing, and one thing only."

Did you read what I wrote at all? Or the claims of the patent that issued? Seriously? I just got through hand delivering you 3 "points of novelty" that are in all claims besides any software or, rather, the Arrhenius equation.

[Ned Heller]

david, I have not had any serious KSR problems, ever. KSR is indeed cited, but the examiners are still persuaded by logic and at times evidence.

Further, what you say about Prometheus is an opinion hardly shared by all. There are some, including me, who think the decision is simple and straightforward.

The bottom line, the Supreme Court is pretty good at getting things right. The collective wisdom and brainpower at the court is the best in the US, and perhaps the best in the world. Give them some respect.

[bad joke ahead]

No, the court and attorneys should use 103 and do it the right way.

[The Shilling Shall Continue]

"So?"

So Ned decides to ignore the expressly stated holding in Benson in order to further his agenda.

The man just has to shill, does he not?

[Joe Patent]

That is an excellent comment. Congress hopefully can be moved to intervene in this arrant nonsense by amending section 101 to expressly grant patent eligible status to software. Wherever technological innovation of any kind leads, the patent laws must follow.

[MM]

the court and attorneys should use 103 and do it the right way

The "right way" would be to recognize that the addition of a computer to any old or obvious method, or to any step in an old or obvious method, adds no patentable weight to the claimed method, i.e., such methods are obvious or ineligible regardless of the fact that the prior art does not teach the use of a computer in such a step.

Likewise, methods of delivering information or "monetizing" activities are per se obvious or ineligible when the only distinction between the allegedly new methods and the prior art is (1) the content of the information being delivered or (2) the monetization of the claimed activity.